Successful

against infringement of

Designs.

Design right infringements cause immense damage to the owners of designs! Our team of experienced design attorneys will fight design infringements effectively and consistently on your behalf.

Call now!

Design right infringement

Design right infringements can significantly impair a company’s market position and lead to high economic losses. They damage owners of design rights and the competition as a whole. Unlawful use causes considerable damage, e.g. in the form of loss of profit and turnover for the holder of the design right. This does not only apply to cases of product piracy and direct imitations, but also to imitators who want to profit by adopting essential design features of protected designs. To prevent others from gaining an undue advantage by infringing your design, it is advisable to take active steps to prevent this.

Design owners can and should take consistent action against unlawful interference. The law offers a wide range of options for defending your own design rights. It should be noted that a design is an unexamined property right. This means that the question of whether a design has the required novelty and individual character is only examined in the infringement proceedings. These questions must therefore be examined and evaluated before legal action is taken.

In the case of infringements of design rights by infringing products, action is usually taken by means of a cease and desist letter under design law. If necessary, the courts are then involved, e.g. by means of an injunction or legal action. In cases of product piracy, legal action is usually taken immediately so that the perpetrators are not forewarned. The police and customs authorities can also be called in to confiscate counterfeits.

Cross-border injury cases

Infringers are often based abroad. However, they frequently also commit infringements in Germany, e.g. because they offer infringing goods for delivery to Germany or their advertising is (also) aimed at consumers or business customers in Germany. An exhibition at a German trade fair or transportation through Germany can also be a starting point in Germany for enforcing design law claims before German courts.

Enforcement in Germany has many advantages, e.g. a claim for reimbursement of costs already for the cease and desist letter and comparatively fast and inexpensive court proceedings. Community design protection, which enables EU-wide enforcement, is also particularly advantageous.

In the absence of a domestic connection or in the event of infringements in several countries, we have been working successfully for many years with design lawyers worldwide to enforce claims abroad.

Design law claims

Claims arising from design rights can be asserted by the design owner or (with the consent of the design owner) also by licensees. In principle, the design owner is entitled to the following claims in the event of a design infringement:

Injunctive relief:
Injunctive relief serves to effectively prevent further acts of infringement. The infringer must refrain from any future use of the design (or similar designs). This claim is fulfilled out of court by submitting a cease-and-desist declaration with a penalty clause.
Removal claim:
The removal claim serves to eliminate existing infringements of rights or their consequences. The infringer must ensure that the infringement is remedied, e.g. by removing infringing advertising or recalling and destroying infringing goods.
Claim for damages:
With the claim for damages, the design owner can assert his damages due to the design right infringement. Damages can be calculated in various ways, e.g. loss of profit, a reasonable license fee or the infringer’s profit. Damages for designs by way of license analogy can amount to between 1-10% of net sales, depending on the industry and significance of the design.
Information and accounting claims:
The right to information and accounting serves to determine and quantify damages and provide information about suppliers and customers who may have committed infringements. The infringer must provide detailed information on the type, scope, duration, turnover and profit resulting from the infringement and render accounts. The infringer is obliged to provide supporting documents such as invoices, delivery bills and orders so that the information can be verified.
Destruction and recall claims:
The infringer must ensure that no further design infringements take place and must therefore recall the products and advertising materials from the distribution channels and destroy them if this is necessary to stop the design infringement.
Reimbursement of costs of the cease and desist letter:
The claim for reimbursement of costs serves to relieve the design owner who takes action against an infringer of his laws by allowing him to demand reimbursement of the associated costs (e.g. lawyers’ fees, test purchase costs) from the infringer in the event of a justified cease and desist letter.

Info box

What is a

unregistered

Design patent?

The unregistered Community design offers automatic but time-limited design protection throughout the EU without registration. It is particularly relevant for products with short market cycles, for example in the fashion industry.

Recommendation:
Registration is preferable for important designs with longer-term significance. The unregistered design is suitable as a supplement or for designs with short-term market relevance.

Key features:

Term of protection: 3 years from first publication in the EU
Automatic protection without registration and fees
Requirements for protection: Novelty and individual character as with a registered design
Creation of protection through verifiable first-time publication in the EU
Only protection against imitation (copies), not against independent parallel developments
Burden of proof for creation and ownership lies with the rights holder

Main differences to the registered design:

Shorter term of protection (3 years instead of max. 25 years)
No proof of ownership available in the register
Narrower scope of protection (only against copies)
No registration costs, but higher documentation requirements
More difficult enforcement due to burden of proof for the creation of property rights

How we enforce design law claims

We check whether and to what extent the infringer is violating design rights. We search for possible further infringements and document the infringements. It is particularly important to analyze the overall impression of the opposing designs. We then develop targeted strategies to take quick and effective action against the infringement. We also consider whether customs and criminal law measures may be appropriate. Our law firm offers you a range of services specially tailored to the prosecution of design right infringements:

Examination and analysis:
We carefully examine whether and to what extent your design is infringed, in particular by comparing the overall impression of the opposing designs. We also check whether the opponent has any priority rights of his own or can prove an independent parallel development. In the case of unregistered Community designs, we also analyze the evidence for the creation of the property right.
Strategic advice:
We advise you on the best possible and most economically sensible strategy for enforcing your design rights. In doing so, we also take into account the possibility of supplementary property rights such as copyright or unfair competition.
Documentation and preservation of evidence:
We document the identified infringements in a court-proof manner as a basis for successful legal enforcement. It is particularly important to secure evidence of the creation of the design and its first publication, especially in the case of unregistered designs.
Preparation and sending of cease and desist letters:
As a rule, we first send a cease and desist letter under design law, in which we request the infringer to cease and desist from infringing the design rights. The cease and desist letter regularly asserts claims for injunctive relief, information, damages, destruction and recall and reimbursement of the cease and desist letter costs. The design law cease and desist letter serves as a first step towards out-of-court clarification and enables the cease and desist letter recipient to avoid legal proceedings by submitting a cease and desist letter with a penalty clause and fulfilling the other claims.
Initiation of legal action:
If the cease and desist letter is not responded to adequately or in the case of particularly brazen imitations, we will quickly initiate legal action – whether by means of an injunction or a lawsuit – in order to consistently enforce your design law claims. In the case of Community designs, we take into account the special jurisdiction of the Community design courts.
Enforcement of claims for injunctive relief:
If an opponent repeatedly infringes, even though he has already undertaken to cease and desist or has been ordered to do so, we will enforce claims for contractual penalties or administrative remedies on your behalf in order to stop the infringement of design rights once and for all.

Our expertise – your advantage

Our law firm has many years of experience in the prosecution of design right infringements, both against infringers in Germany and internationally. Our specialized attorneys combine design and legal expertise with practice-oriented strategies. You benefit from:

Legal expertise:
We work with experienced external patent attorneys who have sound technical training and contribute their technical expertise and work closely with our attorneys specializing in patent law.
Experience before courts nationwide:
We have successfully represented our clients in design matters before courts and authorities for many years – both at EU and national level. We cooperate closely with customs authorities to effectively protect our clients’ laws against counterfeiting and piracy. Thanks to our many years of experience, we have developed a sound understanding of court practice and the procedures of the competent authorities.
International network:
Thanks to our worldwide network of specialized design attorneys, we can also effectively enforce your laws in the event of cross-border infringements. This is particularly important in the EU-wide enforcement of Community designs.
Individual support:
We develop customized solutions that take your specific design and economic requirements into account. In doing so, we pay particular attention to the special features of your industry and its design language.
Success-oriented action:
Our aim is to enforce your design rights effectively and sustainably while always keeping an eye on the creative and economic realities. We also take into account the possibilities of supplementary property rights such as copyright or competition law.